University of Texas v. BENQ, et al. (Fed. Cir. 2008)
In 2005, UT filed suit against a total of fifty-six defendants alleging infringement of claims 10 and 11 of its patent that converts text messages into binary syllabic elements before transmission. After claim construction, the district court granted summary of non-infringement.
Construction of Amended Claim: The appeal focuses on the term “syllabic element.” UT wanted the phrase to be broader than “a character set of one syllable.” In its analysis of claim construction, the CAFC looked to the prosecution history.
After receiving a rejection during prosecution, UT added the “syllabic element” term to replace “an alphabetic character string” and cancelled a dependent claim directed toward matching whole words. On appeal, the CAFC gave “substantial weight” to these amendments — presuming that the amended phrase could not be as broad as the original:
“[C]laim 10 originally recited matching with an alphabetic character string, while one of its dependent claims specified that this string comprised a word. After the examiner identified a reference that showed matching with a word, the Board of Regents limited claim 10 to require matching with syllabic element(s) and canceled the dependent claim that required matching with words. The cancellation of this dependent claim indicates that the set of “syllabic elements” does not include all words.”
In addition, because the amendment was made in order to overcome a prior art reference, the CAFC found it would be nonsensical to give the claim a definition as broad as the original:
“Moreover, if "syllabic elements" included words, then [the prior art] disclosure of matching with words would teach the portion of claim 10 that was amended to distinguish [the prior art]. We decline to adopt a construction that would effect this nonsensical result.”
Finally, the CAFC chose to hold the prosecution history against the patentee by ignoring potential arguments that lack explicit support in the intrinsic record.
“While the Board of Regents might have been able to distinguish [the prior art] on this ground, the intrinsic record fails to support the argument that it actually did so.”
Intermittent Infringement: The asserted method claim uses a comprising transition and requires that “each pre-programmed code being representative of a syllabic element.” The accused products do use pre-programmed codes, but only some of them are representative of syllabic elements. Thus, the question on appeal was whether the claims require a vocabulary that includes only syllabic elements. With some sophistry, the CAFC arrived at the result that an infringing vocabulary would only include syllabic elements. In particular, the claim reads as follows:
“…matching said binary code with one or more pre-programmed codes, each pre-programmed code being representative of a syllabic element; [and]
[f]orming a representation of the word from the one or more syllabic elements represented by the matched one or more pre-programmed codes…“
Here, the CAFC used its grammatical analysis to find that the “matched” pre-programmed codes are a subset of the whole set of “each” pre-programmed code. The claim requires each pre-programmed code to be a syllabic element, ergo the entire set of pre-programmed codes must be in syllabic element form. q.e.d.
Claim construction and resulting summary judgment affirmed.